PATENT ASSIGNMENT AND ROYALTY AGREEMENT
THIS PATENT ASSIGNMENT AND ROYALTY AGREEMENT, consisting of seven pages
(hereinafter the "Agreement") is made and entered into as of the 30th day
of September, 1999 by and between Solplax Limited, of Galway, Ireland
(hereinafter "Assignor") and Graduated Plactics, Inc., a Nevada Corporation
(hereinafter "Assignee"), collectively referred to herein as the "Parties."
As authorized by: Bayan Oleg ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇.
RECITALS
WHEREAS, Assignor is the owner of United States Patent - 5,948,848 a
patent for Biodegradable plastics - material and a method for its
manufacture, ("Patent"), as more specifically described in the Patent
attached as Exhibit A, and the associated Trademarks, Service Marks and any
patents currently pending as described in Exhibit B.
WHEREAS, Assignor is the owner of the Patent and patent pendings, as
set forth in attached Exhibit A and Exhibit B, along with any associated
trademarks (hereinafter collectively referred to as the "Intellectual
Property").
WHEREAS, Assignee is a Nevada corporation which has been formed for
purposes of manufacturing plactics in North America.
WHEREAS, Assignee wishes to use the Intellectual Property, and through
this Agreement seeks a grant from Assignor to utilize the Intellectual
Property in the manufacture, distribution and general marketing of its
plactics and any products associated therewith.
WHEREAS, Assignor is desirous of receiving royalties from Assignee in
exchange for granting to Assignee the Intellectual Property.
BASED UPON THE FOREGOING, and the mutual promises and covenants
contained herein, the Parties agree as follows:
1. Grant of Assignment. Subject to Assignee's full and faithful
performance of the terms and conditions of this Patent Assignment and
Royalty Agreement the Assignor hereby grants and the Assignee accepts the
Assignment of Patent.
2. Uses of Intellectual Property. The Assignee may use Intellectual
Property identified in attached Exhibit A and Exhibit B in, on and for
Assignee's exclusive rights.
3. Territory of Use. Assignee shall be entitled to make use of the
Intellectual Property in the manner prescribed herein only in the United
States of America. The foregoing notwithstanding, the Assignee may use the
Intellectual Property for advertising, worldwide.
4. Expansion of Territory. Subject to the Assignee's full and faithful
performance of its obligations under this Agreement, the Assignor shall
enter into good faith negotiations with Assignee for additional Exclusive
Territory from time to time.
5. Term. The term of this Agreement shall be in perpetuity from the
date of execution hereof, subject to the Parties' termination rights as set
forth herein. Provided Assignee is not in default in its obligation under
this Patent Assignment and Royalty Agreement.
6. Consideration. As consideration for the Assignor's grant of the
Intellectual Property and Patents as described in Exhibit A and Exhibit B,
Assignee agrees that Assignor will pay to Assignor, on a quarterly basis,
an amount equal to five percent (5%) of the Net Receipts received by
Assignee.
6.1 "Net Receipts" means the gross receipts actually received by
Company or its affiliates from all Sales and Licenses of the Intellectual
Property, less the following amounts.
A. Taxes on sale or license, such as sales, use, excise, value-added
and other taxes.
B. Amounts reimbursed by customers, consumers, such as for insurance,
shipping, handling and similar charges.
C. Sales commissions, similar fees, compensation and related costs
paid to sales representatives.
D. Promotional amounts, such as credits, cash discounts, freight
discounts, rebates, promotional allowances or similar items to customers
and any receipts from copies supplied for promotional purposes to the
press, trade, sales representatives or potential customers.
E. Amounts for replacements or revisions, including any receipts from
copies of the Intellectual Property which are distributed by Company to
customers as replacement or replacement, whether provided under a warranty
or maintenance policy or otherwise.
F. Amounts for returns, such as credits, refunds or allowances.
G. Currency exchange fees incurred by Company with respect to
receipts other than in United States dollars.
H. Receipts from distress sales, which are defined as any Sale of the
Intellectual Property for the primary purpose of reducing inventory which
is made at a price less than or equal to thirty percent (30%) of the most
recently announced wholesale price of Company.
I. Unrepatriated amounts, which are receipts by Assignee or its
affiliates that cannot be repatriated to the United States because of
currency control or similar laws. Such amounts will become "received by
Assignee or its affiliates" when freed from such laws.
6.2. Enforcement Assistance. As further consideration for the grant
of the Intellectual Property, Assignee hereby agrees that it will aid and
assist the Assignor in the policing and enforcement of the Intellectual
Property rights, and will cooperate with Assignor in the identification and
prosecution of infringers; which costs shall be borne by Assignor.
6.3. Forbearance from Challenge of Rights. As further consideration
for this grant of Intellectual Property, Assignee agrees that it will at no
time during the term of this Agreement or thereafter, engage in any
activity or legal proceeding, or aid or assist others in such activity or
proceeding, which would seek to challenge Assignor's right, title, and
interest in its Intellectual Property as defined herein.
7. Representations and Warranties.
7.1. Assignor's Covenants. Assignor has the good faith
belief, and represents and warrants that it:
7.1.1 has the exclusive right, title, and interest in and to the
Intellectual Property inclusive of those patents set forth and
described in Exhibit A and B;
7.1.2 has no knowledge, actual or constructive, of any past or
continuing infringements, alleged or otherwise, against or upon
the patents by any persons in the areas of its use;
7.1.3 has properly maintained the Intellectual Property;
7.1.4 has not assigned, licensed, sublicensed or otherwise
transferred any interest in and to the Patent or the Intellectual
Property to any third person ; and
7.1.5 will reasonably prosecute infringers of the Intellectual
Property when, at the Assignor's sole discretion and at its sole cost
and expense, enforcement is appropriate and necessary to preserve
Assignor's right, title and interest in and to the Patent.
8. Assignee's Covenants. Assignee will use its best efforts to
develop, manufacture, distribute, and promote its products
utilizing the Intellectual Property.
9. Indemnifications.
9.1 Indemnification by Assignor. Assignor shall defend, indemnify
and hold Assignee and all of Assignee's directors, officers, employees,
agents, affiliates, subAssignees, successors and assigns (collectively the
"Assignee's Protected Parties") harmless from and against any and all
liabilities, losses, claims, causes of action, suits, damages (including
incidental or consequential damages) and expenses, including reasonable
attorneys' fees and expenses, for which Assignee may become liable or may
incur, or be compelled to pay by reason of:
9.1.1 Assignee's use of the Intellectual Property;
9.1.2 claims of infringement related to the Intellectual
Property; and
9.1.3 any instruction, request, demand, suggestion or other
proposal relating to the Intellectual Property made by Assignor.
9.2 Indemnification by Assignee. In addition to any indemnification
provided under any other agreement entered between these Parties, the
Assignee shall defend, indemnify and hold the Assignor and all of the
Assignor's directors, officers, employees, agents, affiliates, servants or
representatives (collectively, "Assignor's Protected Parties") harmless
from and against any and all liabilities, losses, claims, causes of action,
suits, damages (including incidental and consequential damages) and
expenses, including reasonable attorneys' fees and expenses, losses for
which Assignor or any of Assignor's Protected Parties become liable or may
incur, or be compelled to pay by reason of Assignee's manufacture,
production, distribution, or marketing by the Assignee for any negligence,
error or omission caused by the Assignee.
10. Termination.
10.1 Termination for Breach. Without prejudice to any other rights or
remedies available to either Party to this Patent Assignment and Royalty
Agreement or pursuant to law or equity, either Party shall have the right
to terminate this Agreement upon sixty (60) days prior written notice to
the other if either Party commits a material breach of this Agreement, or
after receiving written notice of such breach fails to:
10.1.1 cure the breach within thirty (30) days after expiration
of sixty (60) day notice provided above;
10.1.2 demonstrate that they are proceeding in good faith toward
a cure of the breach and have been prevented from completing such cure
by force majeure cause.
10.2 Termination by Mutual Consent. The Agreement may be terminated
upon thirty (30) days notice by the mutual consent of the Parties.
11. Arbitration Clause. Any controversy or claim relating to this
Agreement (other than a request for injunctive relief), including any
controversy or claim as to the arbitratibility of any controversy or claim
and any claim for rescission, shall be settled in the County of ▇▇▇▇▇,
State of Nevada, in accordance with the then rules of the American
Arbitration Association, and judgment upon an award rendered in such
arbitration may be entered in any court having jurisdiction of the matter.
12. Effect of Termination. Upon the termination of this Patent
Assignment and Royalty Agreement, any rights of Assignee granted hereunder
shall terminate and automatically revert to Assignor, and Assignee shall
reasonably cooperate with Assignor to record the expiration or termination
of this Agreement with the appropriate governmental offices. After
termination, Assignee shall have one hundred eighty (180) days to effect
the change of all trade usage of the Intellectual Property. Notwithstanding
any other provision of this Agreement, upon the expiration or termination
of this Agreement.
13. Relationship of the Parties. The relationship of Assignor to the
Assignee is that of independent contracting Parties and neither the
Assignee nor its agents or employees shall be considered employees, agents,
servants or representatives of the Assignor. This Agreement shall not be
construed as authority for either Party to act for the other Party in an
agency or other capacity, or to make commitments of any kind for the
account of or on behalf of the other, except to the extent of and for the
purposes provided herein; nor shall this Agreement be interpreted to create
a partnership or joint venture.
14. Governmental Approvals and Taxes. Each party to this Agreement
shall pay their own fees relating to governmental approvals or taxes
relating to the income derived as the result of this Agreement.
15. Notice. All notices, consents, approvals or other documents
required to be given or delivered under this License Agreement shall be
given in writing either by personal delivery or certified mail, return
receipt requested.
Any written notice to Assignor shall be delivered to:
Solplax Limited
President
Any written notice to Assignee shall be delivered to:
Graduated Plactics
▇▇▇▇ ▇▇▇▇▇▇▇▇, President
copy to:
▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇▇
Sperry Young & ▇▇▇▇▇▇▇▇▇▇
▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇ ▇▇. ▇▇▇▇▇ ▇▇▇
▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇
16. Governing Law. This License Agreement shall be governed by the
laws of the State of Nevada.
17. Construction. For purposes of this Agreement, the language
herein shall be deemed to be the language of both Parties, and neither
Party shall be deemed to be the Drafting Party.
18. Attorneys' Fees. In any action or controversy arising out of or
relating to this Agreement, the Prevailing Party shall be entitled to its
reasonable attorneys' fees and costs.
19. Definitions. Whether used with upper or lower case initial
letters, the following terms will have the following meanings when used
herein:
19.1 "Patent" shall mean Assignor's rights to the Patent as used in
Assignor's Federal Registrations and Applications:
U.S. Patent No. 5,948,848
together with such other common law rights as the Assignor may possess.
19.2 "Intellectual Property" shall mean any rights resulting from
Assignor creation, perfection, use of the Patent and Patents Pending,
as more fully described in attached Exhibit A and Exhibit B, which
list may be modified from time to time by written agreement of the
Parties.
20. Integration. This Agreement constitutes the entire understanding
between the Parties with respect to the subject matter herein, and shall
supersede any pre-existing agreements and understandings between the
Parties whether written or oral; provided, however, that to the extent that
a conflict exists with respect to matters concerning the Patent,
Intellectual Property or the use thereof, this Agreement shall control.
21. Successors in Interest. The rights and obligations of the Parties
hereto shall inure to the benefit of, and be binding upon and enforceable
against the respective successors and assigns of the Parties.
22. Waiver. No waiver by any Party of any breach of any provision
herein shall constitute a waiver of any other breach of that or any other
provision hereof.
23. Severability. The invalidity of any provisions of this Agreement
or portion of a provision shall not affect the validity of any other
provision of this Agreement, nor the remaining portion of the applicable
provision.
24. Headings. Headings contained in this Agreement are for the
convenience of reference only and shall not affect the meaning or
interpretation of this Agreement.
25. Counterparts. This Agreement may be executed in multiple
counterparts, each of which shall be deemed to be an original, and all
such counterparts shall constitute one instrument.
26. Amendments. This Patent Assignment and Royalty Agreement shall not
be modified or amended except pursuant to an instrument in writing executed
by a duly authorized agent of each of the Parties to this Agreement.
WHEREFORE, this Agreement has been executed on the date first above written
in Las Vegas, Nevada.
Graduated Plactics, Inc. Solplax Limited
A Nevada Corporation
/s/ ▇▇▇▇ ▇▇▇▇▇▇▇▇ /s/ Solplax Limited
Signature Signature
President
Printed Name/Title Printed Name/Title
9/30/99 9/30/99
Date Date
Approved by:
/s/ Bayan Oleg ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇
____________________________________
Bayan Oleg ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇